Claus, Matthew W. et al.

Patent Trials and Appeals Board

Sep 2, 2020

2019001128 (P.T.A.B. Sep. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/495,235 07/27/2006 Matthew W. Claus 05-6269B 2412
63710 7590 09/02/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
MARCUS, LELAND R
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
lkorovich@cantor.com
mcatarino@cgolaw.com
patentdocketing@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW W. CLAUS,
KEVIN M. FOLEY, and
NIGEL J. RENTON

Appeal 2019-001128
Application 11/495,235
Technology Center 3600

Before HUBERT C. LORIN, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.

LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s Final decision to reject claims 1–37, 39–51, 58–65, and 67–69.1
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies BGC Partners, Inc. as the real party in
interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to electronic trading
and, more specifically, to a system for using trader lists in an electronic
trading system to route a trading order with a reserved size.” (Spec. 1:7–9).
Claim 1, reproduced below with emphasis added, is illustrative of the
claimed subject matter:
1. A system for managing trading orders, comprising:
at least one memory communicatively coupled to at least
one processor, in which the at least one memory stores
instructions which, when executed by the at least one processor,
direct the at least one processor to:
cause a trader list associated in a database with a first
trader to be stored, the stored trader list designating one or more
other traders;
receive a trading order from the first trader via a computer
coupled to the processor over a network, wherein the trading
order is for an order quantity of a first trading product;
determine a first portion and a second portion of the order
quantity;
execute a process to generate electronic signals to cause
to disclose the first portion of the order quantity to a plurality of
traders, the plurality of traders comprising at least one trader
designated by the stored trader list;
if a configurable condition is satisfied:
execute a process to generate electronic signals to
cause to disclose the second portion of the order quantity to one
or more traders that are not designated by the stored trader list;
and
execute a process to generate electronic signals to
cause to prevent the disclosure of the second portion of the order
quantity to the one or more traders designated by the stored
trader list, in which the act to prevent the disclosure of the
second portion of the order quantity to the one or more
designated traders from the trader list comprises a selection of
at least one of:
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execute a process to generate electronic
signals to cause to delete the trading order from one or more
queues associated in a database with the one or more designated
traders,
execute a process to generate electronic
signals to cause to filter the trading order from one or more data
streams associated in a database with the one or more
designated traders from the trader list, and
execute a process to generate electronic
signals to cause to route the trading order away from the one or
more designated traders from the trader list;
receive a specific trading order from a specific trader
designated by the stored trader list;
transmit the specific trading order to the first trader;
receive at least two trading orders from a corresponding at least
two traders not designated by the stored trader list;
determine that the specific trading order is from a trader
on the stored trader list;
determine that the at least two trading orders are from
traders not designated by the stored trader list; and
based at least in part on the determination that the specific
trading order is from a trader designated by the stored trader list
and the determination that the at least two trading orders are
from traders not designated by the stored trader list, cause the
specific trading order and the at least two trading orders to be
displayed to the first trader on a display device, wherein the
display on the display device of any orders from a trader
designated by the stored trader list, including the display of the
specific trading order from the specific trader, is dimmed or
highlighted relative to the display on the display device of the at
least two trading orders from the at least two traders not
designated by the stored trader list;
in which the trader list designating the one or more other
traders is stored before the acts of receiving the trading order
from the first trader, receiving the specific trading order from
the specific trader, and receiving the at least two trading orders
from the corresponding at least two traders.
Appeal Br. 28 – 29 (Claims Appendix).
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REFERENCES
The Examiner relies upon the following as evidence of
unpatentability:
Name Reference Date
Keith US 2001/0042040 A1 Nov. 15, 2001
Lutnick US 2002/0169703 A1 Nov. 14, 2002
REJECTIONS
Claims 1–37, 39–51, 58–65, and 67–69 are rejected under 35 U.S.C. §
101 as being directed to judicially-excepted subject matter.
Claims 1–37, 39–51, 58–65, and 67–69 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Keith and Lutnick.
OPINION
The rejection of claims 1-37, 39-51, 58-65, and 67-69 under 35 U.S.C. § 101
as being directed to judicially-excepted subject matter.
Representative claim
The Appellant argues these claims as a group. See Appeal Br. 10–19
and 26. We select claim 1 as the representative claim for this group, and the
remaining claims 2–37, 39–51, 58–65, and 67–69 stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv).
Preliminary comment
In the briefs, Appellant refers to prior USPTO guidance. See Appeal
Br. 10, section entitled “THE INSTANT CLAIMS MEET THE USPTO
ELIGIBILITY GUIDELINES,” referring to “guidelines published by the
USPTO on May 4, 2016 and November 2, 2016” and Reply Br. 2, referring
to “USPTO guidelines (Berkheimer v. HP, Inc.) of April 19, 2018 … .”)
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Said guidance have been superseded by the 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter
“2019 Revised 101 Guidance”). 2019 Revised 101 Guidance, 84 Fed. Reg.
at 51 (“Eligibility–related guidance issued prior to the Ninth Edition, R–
08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”).
Accordingly, our analysis will not address the sufficiency of the Examiner’s
rejection against the cited prior guidance. Rather, our analysis will comport
with the 2019 Revised 101 Guidance.

Introduction
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
In that regard, claim 1 covers a “machine” and is thus statutory
subject matter for which a patent may be obtained.2 This is not in dispute.
However, the 35 U.S.C. § 101 provision “contains an important
implicit exception: Laws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance, which
requires determining whether “the claim is to a statutory category.” 2019
Revised 101 Guidance, 84 Fed. Reg. at 53. See also id. at 53–54
(“consider[] whether the claimed subject matter falls within the four
statutory categories of patentable subject matter identified by 35 U.S.C.
101.”).
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In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent eligibility on the ground
that claim 1 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.
Alice step one — the “directed to” inquiry:
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S.
at 218 (emphasis added).
The Examiner determined, inter alia, that claim 1 is directed to “using
a trader list to route a trading order with a reserve size.” Final Act. 2.
This abstract idea is similar to abstract ideas previously identified
by a Court, such as a "fundamental economic practice", which
includes concepts relating to the economy and commerce, such
as agreements between people in the form of contracts, legal
obligations, and business relations.
Id. at 2–3.
Appellant disagrees, arguing, inter alia, that:
the Final Action oversimplifies the claims by looking at them
generally and failing to account for the specific requirements
recited in the claims. As seen above, the Final Action alleges
that the claims are merely directed to a "fundamental economic
practice." However, this is an incorrect characterization of the
claimed subject matter. The claims are directed to improvements
in electronic trading that includes executing a process to
prevent disclosure of order data, delete orders from a queue,
filter trading orders and route orders away from traders.
Therefore, the claims recite specific computer operations that
allow the computer to perform a function that conventional
computers cannot perform. The lack of prior art rejections also
supports the position that the claims recite specific computer
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operations that allow the computer to perform a function that
conventional computers cannot perform.
Appeal Br. 12–13. See also id. at 17:
That is, the claimed subject matter includes executing a process
to prevent disclosure of order data, delete orders from a
queue, filter trading orders and route orders away from
traders. In this manner, the system may help reduce use of
computer resources including processor, memory and
network resources such as bandwidth which thereby helps
improve overall computer performance.
Appeal Br. 12 (“the Final Action does not consider the teachings in the
specification that the claims amount to an improvement in computer
performance.”)
Accordingly, a dispute over whether claim 1 is directed to an abstract
idea is present. Specifically, is claim 1 directed to “using a trader list to
route a trading order with a reserve size” (Final Act. 2) or “improv[ing]
overall computer performance” (Appeal Br. 12)?
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Claim Construction3
We consider the claim as a whole giving it the broadest reasonable
construction as one of ordinary skill in the art would have interpreted it in
light of the Specification at the time of filing.4,5,6
Claim 1 describes a “system” comprising a generic “memory
communicatively coupled to” a generic processor. According to the claim,
the memory stores instructions which, when executed by the processor,
directs the processor to perform various steps. In the order as claimed, they
are:
• A first “caus[ing]” step;
• A first “receiv[ing]” step;

3 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).
4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
5 “First, it is always important to look at the actual language of the claims. .
. . Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir.
2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)), among others.
6 See 2019 Revised 101 Guidance, 84 Fed. Reg. at 52, n.14 (“If a claim,
under its broadest reasonable interpretation.”).
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• A first “determin[ing]” step;
• A first “execut[ing]” step;
• Second and third executing steps, “if a configurable condition is
satisfied”;
• A second “receiv[ing]’” step;
• A first “transmit[ting]” step;
• A third “receiv[ing]’” step;
• A second “determin[ing]” step;
• A third “determin[ing]” step; and,
• A “display[ing]” step.
The “causing” step stores a “trader list associated in a database with a
first trader … designating one or more other traders.”
This trader list is stored prior to performing the three “receiv[ing]”
steps; that is “receiv[ing]” (a) a trading order from a first trader “for an order
quantity of a first trading product”; (b) a “specific trading order from a
specific trader designated by the stored trader list;” and (c) “at least two
trading orders from a corresponding at least two traders not designated by
the stored trader list.”
For (a), a first portion and a second portion of the order quantity are
“determine[d].”
Regarding the first portion of the order quantity, a process is
“execute[d]” to “disclose [it] to a plurality of traders, the plurality of traders
comprising at least one trader designated by the stored trader list.”
Regarding the second portion of the order quantity, “if a configurable
condition is satisfied” two processes are “execute[d]”: (1) “to disclose the
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second portion of the order quantity to one or more traders that are not
designated by the stored trader list” and (2) “to prevent the disclosure of the
second portion of the order quantity to the one or more traders designated by
the stored trader list.” The disclosure–prevention “act … comprises a
selection of at least one of”:
execute a process to generate electronic signals to cause to
delete the trading order from one or more queues associated in a
database with the one or more designated traders,
execute a process to generate electronic signals to cause to
filter the trading order from one or more data streams associated
in a database with the one or more designated traders from the
trader list, and
execute a process to generate electronic signals to cause to
route the trading order away from the one or more designated
traders from the trader list.
(b) is “transmit[ted]” to the first trader.
(b) and (c) are displayed based on two determinations. The first is a
determination that (b) is “from a trader on the stored trader list” and the
second determination is that (c) is “from traders not designated by the stored
trader list. (The second and third “determin[ing]” steps). Thereupon, (b)
and (c) are
displayed to the first trader on a display device, wherein the
display on the display device of any orders from a trader
designated by the stored trader list, including the display of the
specific trading order from the specific trader, is dimmed or
highlighted relative to the display on the display device of the at
least two trading orders from the at least two traders not
designated by the stored trader list.
Claim 1 is reasonably broadly construed as covering a system
employing a generic processor to perform a scheme for managing trading
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orders depending on whether corresponding traders are or are not designated
on a stored trading list. This comports with the Specification.
According to the Specification,
[m]any of [ ] electronic trading systems [‘facilitating the trading
of financial instruments and commodities such as stocks, bonds,
currency, futures contracts, oil, and gold’] use a bid/offer process
in which bids and offers are submitted to the systems by a passive
side and then those bids and offers are hit or lifted (or taken) by
an aggressive side. For example, a passive trading counterparty
may submit a “bid” to buy a particular trading product. In
response to such a bid, an aggressive side counterparty may
submit a "hit" in order to indicate a willingness to sell the trading
product to the first counterparty at the given price. Alternatively,
a passive side counterparty may submit an “offer” to sell the
particular trading product at the given price, and then the
aggressive side counterparty may submit a “lift” ( or “take”) in
response to the offer to indicate a willingness to buy the trading
product from the passive side counterparty at the given price.
Spec., 2:5–16. According to the Specification, “the disadvantages and
problems associated with [these] prior electronic trading systems have been
substantially reduced or eliminated.” Id. at 3:2–4. One advantage of the
claimed system
is that the trading platform uses trader lists that assist traders in
managing risks associated with trading. For example, a particular
trader may perceive that trades with highly specialized traders
are not likely to be profitable. Based on this perception, the
particular trader may configure a trader list to designate those
highly specialized traders with which the particular trader does
not want to trade. When the particular trader submits a trading
order and/or an order price feed, the trading platform may
transmit the trading order and/or the order price feed to the other
traders in the trading system, with the exception of those traders
designated by the trader list. Thus, the trading platform may
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prevent trades that the particular trader believes would be
unprofitable.
Id. at 3:30–4:7. “Another advantage is that, by using trader lists, the trading
platform may limit or eliminate small trades that are perceived as
nuisances.” Id. at 4:8–9.
Given the method as claimed as reasonably broadly construed above
and in light of the Specification’s description of the objective of the
invention is to use trader lists to, inter alia, “limit or eliminate small trades
that are perceived as nuisance,” we reasonably broadly construe claim 1 as
being directed to a scheme for managing trading orders depending on
whether corresponding traders are or are not designated on a stored trading
list.
The Abstract Idea7
Above, where we reproduce claim 1, we identify in italics the
limitations we believe recite an abstract idea.8 Based on our claim
construction analysis (above), we determine that the identified limitations
describe a scheme for managing trading orders depending on whether
corresponding traders are or are not designated on a stored trading list.
Managing trading orders is a commercial interaction. It falls within the
enumerated “[c]ertain methods of organizing human activity” grouping of

7 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. Step 2A is two prong inquiry.
8 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. “To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the
claim under examination (individually or in combination) that the examiner
believes recites an abstract idea.” 84 Fed. Reg. at 54.
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abstract ideas set forth in the 2019 Revised 101 Guidance.9 2019 Revised
101 Guidance, 84 Fed. Reg. at 52.
Technical Improvement10 (Appellant’s Argument)
Our characterization of what the claim is directed to is similar to that
of the Examiner’s (“using a trader list to route a trading order with a reserve
size” (Final Act. 2)). The Examiner’s characterization is described at a
somewhat higher level of abstraction. Nevertheless, “[a]n abstract idea can

9 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” 84 Fed. Reg. at 54. This case implicates
subject matter grouping “(b):” “(b) Certain methods of organizing human
activity—fundamental economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations); managing
personal behavior or relationships or interactions between people (including
social activities, teaching, and following rules or instructions).” Id. at 52.
10 This corresponds to Prong Two [“If the Claim Recites a Judicial
Exception, Evaluate Whether the Judicial Exception Is Integrated Into a
Practical Application”] of Step 2A of the 2019 Revised 101 Guidance. “A
claim that integrates a judicial exception into a practical application will
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” 84 Fed. Reg.
at 54. One consideration, implicated here, that is “indicative that an
additional element (or combination of elements) may have integrated the
exception into a practical application” is if “[a]n additional element reflects
an improvement in the functioning of a computer, or an improvement to
other technology or technical field.” Id. at 55.

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generally be described at different levels of abstraction.” Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240, 1240–41 (Fed. Cir. 2016) (“The
Board’s slight revision of its abstract idea analysis does not impact the
patentability analysis.”).
We have reviewed the record and are unpersuaded as to error in our or
the Examiner’s characterization of what claim 1 is directed to.
Appellant contends that “the system may help reduce use of
computer resources including processor, memory and network
resources such as bandwidth which thereby helps improve overall
computer performance.” Appeal Br. 12. See also id. at 14 (“may help
reduce computer workload including computer resources such as
memory resources, processor resources, and network resources such as
network bandwidth”), 19 (“reduces the number of transactions over the
network”), and Reply Br. 4 (may help manage use of computer resources
including processor, memory and network resources such as bandwidth
which thereby help improve overall computer performance.”)
However, we do not find that the claim adequately reflects an
improvement in overall computer performance, let alone “reducing use of
computer resources including processor, memory and network
resources such as bandwidth.” Appeal Br. 12.
The system as claimed describes, in very general terms, steps for
processing (via "caus[ing],” “receiv[ing],” “determin[ing],” “execut[ing],”
“transmit[ting],” and "display[ing]" steps) certain types of information, e.g.,
a trading list. The system as claimed is not focused on improving
technology but on a scheme for managing orders for traders vis-a–vis the
trading list. Cf. Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384
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(Fed. Cir. 2019) (“The claims are focused on providing information to
traders in a way that helps them process information more quickly, ’556
patent at 2:26–39, not on improving computers or technology.”).
We have carefully reviewed the claim. Per our previous claim
construction analysis, claim 1 is reasonably, broadly construed as covering a
scheme for managing trading orders depending on whether corresponding
traders are or are not designated on a stored trading list. We see no specific
asserted improvement in computer capabilities recited in the claim. Rather
than being directed to any specific asserted improvement in computer
capabilities, the claim supports the opposite view — that the claimed subject
matter is directed to a scheme for managing trading orders depending on
whether corresponding traders are or are not designated on a stored trading
list employing generic devices. See Spec., e.g., 6:3–7:9.
The claim provides no additional structural details that would
distinguish any device required to be employed to practice the system as
claimed, such as the recited “at least one memory communicatively coupled
to at least one processor, in which the at least one memory stores
instructions,” “database,” and “a computer coupled to the processor over a
network,” from its generic counterparts.11
With respect to the "caus[ing],” “receiv[ing],” “determin[ing],”
“execut[ing],” “transmit[ting],” and "display[ing]" steps, the Specification
attributes no special meaning to any of these operations, individually or in

11 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 954 (Fed.
Cir. 2018) (non-precedential) (“Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”).
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the combination, as claimed. In our view, these are common computer
processing functions that one of ordinary skill in the art at the time of the
invention would have known generic computers were capable of performing
and would have associated with generic computers. Cf. OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
Beyond the abstract idea of offer-based price optimization, the
claims merely recite “well-understood, routine conventional
activit[ies],” either by requiring conventional computer activities
or routine data-gathering steps. Alice, [573 U.S. at 225 (quoting
Mayo, 566 U.S. at 73)] . . . . For example, claim 1 recites
“sending a first set of electronic messages over a network to
devices,” the devices being “programmed to communicate,”
storing test results in a “machine-readable medium,” and “using
a computerized system . . . to automatically determine” an
estimated outcome and setting a price. Just as in Alice, “all of
these computer functions are ‘well-understood, routine,
conventional activit[ies]’ previously known to the industry.”
Alice, [573 U.S. at 225 (quoting Mayo, 566 U.S. at 73])
(alterations in original); see also buySAFE[, Inc. v. Google, Inc.],
765 F.3d [1350,] 1355 [(Fed. Cir. 2014)] (“That a computer
receives and sends the information over a network—with no
further specification—is not even arguably inventive.”).
We find the Appellant’s remark that the claim presents a technical-
improvement solution unpersuasive as to error in the Examiner’s or our
characterization of what the claim is directed to because the method as
claimed fails to adequately support it. We are unable to point to any claim
language suggestive of an improvement in computer performance. Nor can
we find any suggestion of the argued over improvements (e.g., reducing use
of computer resources including processor, memory and network resources
such as bandwidth) in the Specification so as to find that “the specification
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as a whole … makes clear …the technological benefit.” Koninklijke KPN
N.V. v. Gemalto M2M GmbH, 942 F.3d 1143, 1152 (Fed. Cir. 2019).
An attorney argument that such an improvement exists is alone insufficient.
See generally In re Glass, 474 F.2d 1015, 1019 (CCPA 1973); In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984); and, In re Schulze, 346 F.2d 600, 602 (CCPA
1965).
Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we find there is no integration of the abstract idea into a practical
application.
Appellant argues that “the claimed subject matter is directed to
improvements in electronic trading,” as a result of the steps set forth in the
claim regarding the second portion of the order quantity that includes a
disclosure–prevention act. Appeal Br. 16; Reply Br. 2–3. Appellant also
argues that
the claimed subject matter includes executing a process to
prevent disclosure of order data, delete orders from a queue,
filter trading orders and route orders away from traders. In
this manner, the system may help reduce use of computer
resources including processor, memory and network
resources such as bandwidth which thereby helps improve
overall computer performance.
Appeal Br. 17; see also Reply Br. 4.
The difficulty with these arguments is that they point to the recited
steps (“caus[ing],” “receiv[ing],” “determin[ing],” “execut[ing],”
“transmit[ting],” and “display[ing]”) themselves, the very subject matter that
we, and the Examiner, have characterized as being an abstract idea. Rather
than showing that these steps describe a technical improvement in computer
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performance, the Appellant points to result-based functional language that is
without any means for achieving any purported technological improvement.
The claimed invention the Appellant points to – that is, “executing a
process to prevent disclosure of order data, delete orders from a queue, filter
trading orders and route orders away from traders” — is described via a
scheme (i.e., the “caus[ing],” “receiv[ing],” “determin[ing],” “execut[ing],”
“transmit[ting],” and “display[ing]” steps) for managing trading orders
depending on whether corresponding traders are or are not designated on a
stored trading list. By so broadly defining the inventive method, that is, by
setting out what it is aspiring to accomplish without any means for achieving
it, let alone any purported computer resources improvement, the claim is in
effect presenting the invention in purely result-based functional language,
strengthening our determination under Alice step one that the claim is
directed to an abstract idea. Cf. Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017) (“Claim 1 recites a
method for routing information using result-based functional language. The
claim requires the functional results of ‘converting,’ ‘routing,’ ‘controlling,’
‘monitoring,’ and ‘accumulating records,’ but does not sufficiently describe
how to achieve these results in a non-abstract way.”). See also Uniloc USA
v. LG Elecs. USA, 957 F.3d 1303, 1308 (Fed. Cir. 2020):
The claims we held ineligible in Two-Way Media similarly failed
to concretely capture any improvement in computer
functionality. In Two-Way Media, the claims recited a method
of transmitting packets of information over a communications
network comprising: converting information into streams of
digital packets; routing the streams to users; controlling the
routing; and monitoring the reception of packets by the users.
874 F.3d at 1334. Two-Way Media argued that the claims solved
data transmission problems, including load management and
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bottlenecking, but the claimed method was not directed to those
improvements. Id. at 1336–37. We therefore held the claims
ineligible because they merely recited a series of abstract steps
(“converting,” “routing,” “controlling,” “monitoring,” and
“accumulating records”) using “result-based functional
language” without the means for achieving any purported
technological improvement. Id. at 1337.
Appellant argues that Core Wireless “uniquely match[es] the facts of
the present case.” Appeal Br. 15. We disagree. Core Wireless Licensing
S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1359–63 (Fed. Cir. 2018) held
patent eligible claims reciting an improved user interface for electronic
devices that improved the efficiency of the electronic device, “particularly
those with small screens.” See Customedia Technologies, LLC v. Dish
Network Corporation, 951 F.3d 1359, 1364 (Fed. Cir. 2020). No such
technical improvement is shown in the record before us. What the record
shows is an improved way to handle trades employing generic devices. But
the Federal Circuit has
held that it is not enough, however, to merely improve a
fundamental practice or abstract process by invoking a computer
merely as a tool. For example, in Affinity Labs. of Texas, LLC v.
DIRECTV, LLC, we held that claims to a method of providing
out-of-region access to regional broadcasts were directed to an
abstract idea. 838 F.3d 1253, 1258 (Fed. Cir. 2016). We
determined the claims were not a patent-eligible improvement in
computer functionality because they simply used cellular
telephones “as tools in the aid of a process focused on an abstract
idea.” Id. at 1262; see also In re TLI Commc’ns LLC Patent
Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (holding ineligible
claims reciting concrete physical components merely as “a
generic environment in which to carry out the abstract idea of
classifying and storing digital images in an organized manner”).
Likewise, in Intellectual Ventures I LLC v. Capital One Bank
(USA), we held that claims reciting a system for providing web
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pages tailored to an individual user were directed to an abstract
idea. 792 F.3d 1363, 1369–70 (Fed. Cir. 2015). We held that
“claiming the improved speed or efficiency inherent with
applying the abstract idea on a computer” was insufficient to
render the claims patent eligible as an improvement to computer
functionality. Id. at 1367, 1370; see also Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715–16 (Fed. Cir. 2014) (holding that
displaying an advertisement in exchange for access to
copyrighted material is an abstract idea). And in SAP Am., Inc.
v. InvestPic, LLC, we held patent ineligible claims directed to
“selecting certain information, analyzing it using mathematical
techniques, and reporting or displaying the results of the
analysis.” 898 F.3d 1161, 1167–68 (Fed. Cir. 2018). We
determined the claims were focused not on a physical-realm
improvement to computers as tools but rather an improvement in
wholly abstract ideas. Id. at 1168.
Id. at 951 F.3d 1364–1365.
Appellant also argues that McRO is applicable here. Appeal Br. 19.
We disagree. No technological improvement has been shown here. Cf.
Smart Systems Innovations, LLC v. Chicago Transit Authority, 873 F.3d
1364, 1372–73 (Fed. Cir. 2017):
in [McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299
(Fed. Cir. 2016)], we held that a “claimed process us[ing] a
combined order of specific rules” improved upon existing
technological processes, such that it did not recite an abstract
idea. 837 F.3d at 1315–16. Here, the Asserted Claims are not
directed to specific rules that improve a technological process.
Again, the claims recite the collection of financial data from third
parties, the storing of that financial data, linking proffered credit
cards to the financial data, and allowing access to a transit system
based on the financial data. The claims are not directed to a
combined order of specific rules that improve any technological
process, but rather invoke computers in the collection and
arrangement of data. Claims with such character do not escape
the abstract idea exception under Alice step one. See
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[RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322 (Fed. Cir.
2017)”], 855 F.3d at 1327.
We have considered Appellant’s other arguments challenging the
Examiner’s determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claim 1 is directed to an abstract idea.

Alice step two — Does the Claim Provide an Inventive Concept?12
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined, inter alia, that
Individually, the claims recite the use of a generic
computer performing generic computing tasks, specifically:
“at least one memory communicatively coupled to at least
one processor,”
“receiving by a processor a trading order from a first trader
via a computer coupled to the processor over a network,”
“A non-transitory computer-readable medium”
“execute a process to generate electronic signals”
Additionally, Applicant's disclosure is clear that the
computer embodiment

12 This corresponds to Step 2B, of the 2019 Revised 101 Guidance, 84 Fed.
Reg. at 56 “if a claim has been determined to be directed to a judicial
exception under revised Step 2A, examiners should then evaluate the
additional elements individually and in combination under Step 2B to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
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envisioned is that of a general-purpose, generic computer:
It should be understood that the internal structure of
trading platform 18 and the interfaces, processors,
and memory devices associated therewith is
malleable and can be readily changed, modified,
rearranged, or reconfigured to achieve the intended
operations of trading platform 18.
As-filed specification (page 12, lines 6-9)
Taken as an ordered combination, the limitations are
directed to limitations referenced in Alice Corp. that are not
enough to qualify as significantly more when recited in a claim
with an abstract idea include, as a non-limiting or non-exclusive
examples: (i) mere instructions to implement the idea on a
computer, and/or (ii) recitation of generic computer structure that
serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously
known to the pertinent industry, such as data entry, collection,
display, or reporting.
Final Act. 5–6. We agree.
We addressed the matter of whether the claim presented any purported
specific asserted technical improvements in our analysis above under
step one of the Alice framework. This is consistent with the case law. See
Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018)
(“We have several times held claims to pass muster under Alice step one
when sufficiently focused on such improvements.”). Such an argument, as
the Appellant has made here, can also challenge a determination under step
two of the Alice framework. See buySAFE, 765 F.3d at 1354–55. “[R]ecent
Federal Circuit jurisprudence has indicated that eligible subject matter can
often be identified either at the first or the second step of the Alice/Mayo
[framework].” See 2019 Revised 101 Guidance, 84 Fed. Reg. at 53, n.17.
The Appellant argues that
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the claimed subject matter includes executing a process to
prevent disclosure of order data, delete orders from a queue,
filter trading orders and route orders away from traders.
Appellant respectfully submits that the claimed invention, in one
example, recites an additional element (or combination of
elements) that are "not well-understood, routine or
conventional, the system may help manage use of computer
resources including processor, memory and network
resources such as bandwidth which thereby help improve
overall computer performance. Therefore, Appellant has
shown an example of "a teaching in the specification about
how the claimed invention improves a computer or other
technology,"
Appellant respectfully submits that the claimed features
above are not well-understood, routine or conventional.
Reply Br. 4.
But this does not explain in what way the claimed system provides a
technical improvement. The argument relies on the claim’s result-based
functional language involving the disclosure–preventing act as the basis for
contending that the claim provides “features [that] are not well-understood,
routine or conventional.”
Rather than being based on any technical details, the argument looks
to the very scheme for managing trades that we have characterized as being
an abstract idea. In effect, the Appellant is arguing that the abstract idea is
“not well-understood, routine or conventional.” That may be but
“[g]roundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology, 569 U.S. at 591.
Cf. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315
(Fed. Cir. 2016).
Indeed, “[t]he ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining
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whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v.
Diehr, 450 U.S. 175, 188–89 (1981) (emphasis added); see also
Mayo, 132 S. Ct. at 1303–04 (rejecting “the Government’s
invitation to substitute §§ 102, 103, and 112 inquiries for the
better established inquiry under § 101”). Here, the jury’s general
finding that Symantec did not prove by clear and convincing
evidence that three particular prior art references do not disclose
all the limitations of or render obvious the asserted claims does
not resolve the question of whether the claims embody an
inventive concept at the second step of Mayo/Alice.
The arguably unconventional nature of the abstract idea does not affect the
determination that the claim is directed to an abstract idea. The abstract idea
itself cannot amount to “‘significantly more than a patent upon the
[ineligible concept] itself.’” Alice, 573 U.S. at 218 (quoting Mayo, 566 U.S.
at 73), whether or not it is conventional.
We are unpersuaded that claim 1 presents an element or combination
of elements indicative of a specific asserted technical improvement, thereby
rendering the claimed subject matter sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon a scheme for
managing trading orders depending on whether corresponding traders are or
are not designated on a stored trading list.
We have reviewed the claim in light of the Specification and, as
explained above, we find the claimed subject matter insufficiently expresses
a technical improvement as a result of performing the functions as broadly
as they are recited.
We cited the Specification in our earlier discussion. It is intrinsic
evidence that the claimed “at least one memory communicatively coupled to
at least one processor, in which the at least one memory stores instructions,”
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“database,” and “a computer coupled to the processor over a network” as
claimed are conventional. In particular, see, e.g., Spec., 7:5–6 (“general-
purpose personal computer (PC)”). In doing so, we have followed “Changes
in Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP Inc.[, 881 F.3d 1360
(Fed. Cir. 2018)],” USPTO Memorandum, Robert W. Bahr, Deputy
Commissioner For Patent Examination Policy, April 19, 2018 (the
“Berkheimer Memo”)).
Here, the Specification indisputably shows the recited “at least one
memory communicatively coupled to at least one processor, in which the at
least one memory stores instructions,” “database,” and “a computer coupled
to the processor over a network” individually and in the context of a social
network as claimed was conventional at the time of filing. Accordingly,
there is sufficient factual support for the well-understood, routine, or
conventional nature of the claimed “client device” individually or in the
combination as claimed.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into a patent–eligible application.
We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 1, and claims 2–37, 39–51, 58–65,
and 67–69 which stand or fall with claim 1, are directed to an abstract idea
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and do not present an “inventive concept,” we sustain the Examiner’s
conclusion that they are directed to patent-ineligible subject matter for being
judicially-excepted from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow,
Inc., 656 F. App’x 991, 997 (Fed. Cir. 2016) (“We have considered all of
LendingTree’s remaining arguments and have found them unpersuasive.
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an ‘inventive concept,’ we hold that they
are directed to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g.,
OIP Techs., 788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016).

The rejection of claims 1–37, 39–51, 58–65, and 67–69 under 35 U.S.C.
§ 103(a) as being unpatentable over Keith and Lutnick.
All the claims require “determin[ing] a first portion and a second
portion of [an] order quantity” (claim 1; similar limitations appear in
independent claims 20 and 39).
According to the Examiner, said claim limitation is disclosed in
paragraph223 of Keith. Final Act. 7. We reproduce paragraph 223 of Keith:
[0223] Some conventional trading systems support a so–called
reserve book feature. A trader submits an appropriately
designated order, and only a predetermined amount of the order
is revealed on the public book. For example, a reserve order for
10,000 shares with 1,000 shown would place an order for 9,000
shares on the reserve book, and an order for 1,000 shares on the
public book. After the 1,000 shares is executed, the reserve book
would shift another 1,000 shares to the public book, and so on
until the entire order was executed. These conventional systems
use the same methodology for executing all portions of the order.
In contrast, system 5 may execute portions of an active order in
different ways: the first contra-side portions being obtained from
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the book and the second contra-side portions being obtained
through the auction form of crowd price improvement.
Claim 1 further requires preventing the “disclosure of the second
portion of the order quantity to [ ] one or more traders designated by [a]
stored trader list,” and claims 20 and 39 recite similar language.
According to the Examiner, Keith discloses this in “paragraph 223 in
combination with para 225, where those who do not meet the disclosure
condition of Keith are on the trader list and thus are not allowed to see the
order.” Final Act. 7. According to the Examiner, paragraph 48 discloses the
trader list. Id. at 6 (“paragraph 48, where an order ELF of Keith is the
trading order”).
We reproduce para. 225 of Keith as reproduced at page 22 of
Appellant’s Appeal Brief:
An order umpire may support disclosure levels from an order
ELF. A first order ELF specifies a disclosure level for each entry
in the call list associated with an order it posts at an order umpire.
Then, another order ELF inquiring at the order umpire also
provides its call list including a disclosure level for the first ELF.
If the call lists intersect and the disclosure levels are
compatible, the order umpire notifies the parties of the other
party's permitted disclosure. In one embodiment, the
discretion level is selected from (i) none, (ii) owner, (iii) owner
and symbol, (iv) owner, symbol and side, (v) owner, symbol,
side and approximate minimum lot size, (vi) owner, symbol,
side, minimum lot size and soft price, and (vii) owner,
symbol, side, minimum lot size and hard price. A soft price
requires affirmation to execute. A hard price is immediately
executable.
We have reviewed said disclosures and find, as Appellant has, that
paragraph 223 in combination with paragraph 225 does not show preventing
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the “disclosure of the second portion of the order quantity to [ ] one or more
traders designated by [a] stored trader list” (claim 1).
While Keith discloses selecting discretion levels for the disclosure of
an entry in a call list associated with a posted order, Keith does not identify a
trader receiving a first but not a second quantity of an order. We agree with
Appellant that “the discretion levels (i)-(vii) described above in [0225] of
Keith do not disclose or suggest any level that prescribes disclosing and
preventing different quantities of an order.” Appeal Br. 23.
Accordingly, paragraph 225 of Keith does not disclose preventing the
“disclosure of the second portion of the order quantity to [ ] one or more
traders designated by [a] stored trader list” (claim 1) as alleged. Given no
other evidence that said claim limitation is disclosed or suggested by the
cited prior art references, a prima facie case of obviousness has not been
made out in the first instance. The rejection of the claims is not sustained.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–37, 39–
51, 58–65,
67-69
101 Eligibility 1–37, 39–
51, 58–65,
67–69

1–37, 39–
51, 58–65,
67–69
103(a) Keith, Lutnick 1–37, 39–
51, 58–65,
67–69
Overall
Outcome
1–37, 39–
51, 58–65,
67–69

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED